Ex Parte SanetDownload PDFPatent Trial and Appeal BoardJan 31, 201713623667 (P.T.A.B. Jan. 31, 2017) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/623,667 09/20/2012 Morton J. Sanet Sanet/Chinese DIV 8533 27316 7590 02/01/2017 MAYBACK & HOFFMAN, P.A. 5846 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330 EXAMINER UTAMA, ROBERT J ART UNIT PAPER NUMBER 3715 MAIL DATE DELIVERY MODE 02/01/2017 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MORTON J. SANET ____________________ Appeal 2014-006331 Application 13/623,667 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, ANNETTE R. REIMERS, and SEAN P. O’HANLON, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Morton J. Sanet (Appellant) appeals under 35 U.S.C. § 134 from the Examiner’s decision to reject claims 1–20 for non-statutory obviousness- type double patenting over claims 1–20 of Sanet (US 8,408,914 B2, issued Apr. 2, 2013) 1 and under 35 U.S.C. § 101 as being directed to non-statutory 1 The subject application is a divisional application of U.S. Patent Application Serial No. 11/443,568, filed May 31, 2006, now U.S. Patent No. 8,297,978. See Spec. para. 1. U.S. Patent No. 8,408,914 (U.S. Patent Application Serial No. 13/223,925, as referenced by the Examiner in the Obviousness-Type Double Patenting rejection (see Final Act. 3)), is a continuation-in-part of U.S. Appeal 2014-006331 Application 13/623,667 2 subject matter. An oral hearing in accordance with 37 C.F.R. § 41.47 was held on January 19, 2017. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a method for learning Chinese character script.” Spec. para. 3; Fig. 1. Claims 1 and 20 are independent. Claim 1 is illustrative of the claimed subject matter and recites: 1. A method for creating scripts of Chinese-character-based languages, which comprises: placing in a key-symbol dictionary bridge entries in the form of text viewable on at least a portion of at least one dictionary page, each of said bridge entries: being respectively associated with a single Chinese radical within a set of Chinese radicals; having the single Chinese radical as a symbol; having a single keyword corresponding to a given meaning of the single Chinese radical, the single keyword: being in a user’s language and having letters in the user’s alphabet; and including therein a bridge comprised of at least one of the letters; and having a plurality of different memory joggers, each of the different memory joggers being a word in the user’s language containing therein the bridge; transcribing on at least one page of the key-symbol dictionary a list of user-recognized radicals in a Chinese- character-based language; transcribing, for each item in the list: Patent Application Serial No. 11/443,568, now U.S. Patent No. 8,297,978. See Final Act. 3; see also id. at 5; Br. 17; U.S. Patent No. 8,408,914, Cover Sheet. Appeal 2014-006331 Application 13/623,667 3 the bridge contained within the key-symbol dictionary associated with the respective one of the user- recognized radicals; and the keyword contained within the key-symbol dictionary associated with the bridge and the respective one of the user-recognized radicals; identifying a complex Chinese multi-character to be learned; transcribing a set of at least two of the user-recognized radicals within the complex Chinese multi-character to be learned; transcribing a mnemonic in the language of the user for recalling the written form of the complex Chinese multi- character, the mnemonic being based upon the keywords, memory joggers, and bridges associated with the recognized set of the at least two user-recognized radicals within the complex Chinese multi-character; and transcribing the recognized set of the user-recognized radicals to form the written multi-character utilizing the mnemonic. ANALYSIS Obviousness-Type Double Patenting Rejection Appellant advocated for a reversal of the rejection under 35 U.S.C. § 101, and presumably believed there to be at least some chance of that outcome. See Br. 17–34. As such, Appellant was of the belief that the claims in their current form would potentially be allowed and issued in a patent. See id. at 18 (“If the Section 101 rejection is invalid and the claims at issue are allowable -- as no other reason remains to prevent allowance -- then Appellant would file a Terminal Disclaimer upon such a holding, making the entire application allowable.”). As discussed infra, the Examiner did not err in rejecting claims 1–20 of the subject application under 35 U.S.C. § 101. In this case, Appellant has Appeal 2014-006331 Application 13/623,667 4 not apprised us of error in the Examiner’s obviousness-type double patenting rejection of claims 1–20 of the subject application over claims 1–20 of Sanet. Thus, we sustain the Examiner’s double patenting rejection. 101 Rejection Appellant does not present arguments for independent claim 20 or dependent claims 2–19 separate from those presented for independent claim 1. See Br. 18–34. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–20 stand or fall with claim 1. The Supreme Court has set forth “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012)). According to the Supreme Court’s framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Id. The Supreme Court characterizes the second step of the analysis as “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. Appeal 2014-006331 Application 13/623,667 5 According to Alice, the first question to be settled is whether claim 1 of the subject application is directed to a patent-ineligible concept. Our reviewing court, relying on Supreme Court precedent, has “consistently ‘refused to find processes patentable when they merely claimed a mental process standing alone and untied to another category of statutory subject matter[,] even when a practical application was claimed.’” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (quoting In re Comiskey, 554 F.3d 967, 980 (Fed. Cir. 2009)). “Such a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101.” Id. at 1373. In this case, each of the method steps of claim 1 “can be performed in the human mind, or by a human using a pen and paper.” See Cyber Source Corp., 654 F.3d at 1372 (relying on the Supreme Court’s decision in Gottschalk v. Benson, 409 U.S. 63, 67 (1972), for the proposition that “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas”). For example, the “placing” step of claim 1 can be performed by a human writing (i.e., placing) keyword bridge entries of user-recognized Chinese radicals in a key-symbol dictionary. Similarly, the “transcribing” and “identifying” steps of claim 1 can be performed either in the human mind, or by a human writing (i.e., transcribing) the user-recognized Chinese radicals or mnemonics. Thus, the method steps of claim 1 are seen as being directed to the abstract idea of a method for organizing human activity. See Final Act. 3–4, 7; see also Ans. 4; Alice, 134 S.Ct. at 2356. In other words, Appellant’s claimed method is just a certain prescribed way for a human Appeal 2014-006331 Application 13/623,667 6 being to create a language script and is, thereby, an abstract idea in terms of claiming a method of organizing human activity.2 As we noted supra, according to Alice, the question to be settled next is whether claim 1 of the subject application recites an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than an abstract idea. According to Supreme Court precedent, “the machine-or-transformation test is a useful and important clue, an investigative tool, for determining whether some claimed inventions are processes under § 101,” but “is not the sole test for deciding whether an invention is a patent-eligible ‘process.’” Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010). In this case, Appellant contends that the machine prong of the “machine-or-transformation test” is met “[b]ecause the method [of claim 1] produces what can be a book or dictionary [and that] this dictionary can be considered a machine that is specifically devised and adapted to carry out the process . . . or it is simply creating an article of manufacture – a physical dictionary.” Br. 27. Appellant further contends that the transformation prong of the “machine-or-transformation test” is met “because the pages of the dictionary are transformed from one state (a blank book) to another state (with text on its pages formed in a particular way).” Id. at 29; see also id. at 27–28. Essentially, Appellant’s contention that (1) the method of creating a book or dictionary of claim 1 satisfies the machine prong of the machine-or- 2 Indeed, Appellant acknowledges that the method of claim 1 can be performed by a human. See Br. 33–34 (“[T]he claimed invention [is] a method of providing a particular dictionary and then having a user supplement that dictionary with separate dictionaries containing radicals and complex Characters that the user knows and/or wishes to learn based upon their current knowledge.”). Appeal 2014-006331 Application 13/623,667 7 transformation test, and (2) the “transcribing” aspects of claim 1 satisfy the transformation prong of the machine-or-transformation test amounts to arguments that creation of a book or dictionary and the transcribing recitations of claim 1 ensure that claim 1 is directed to significantly more than an abstract idea. In response to Appellant’s contention that creating a book or dictionary satisfies the machine prong of the machine-or-transformation test of claim 1, the Examiner “takes the position that a dictionary cannot be considered of a machine since [it] doesn’t meet any of the characteristic[s] of being a machine or an apparatus.” Final Act. 7; see also Ans. 4. Further, in response to Appellant’s contention that the “transcribing” aspects of claim 1 satisfy the transformation prong of the machine-or-transformation test, the Examiner determines: In order to meet the transformation test one must transform of an article means that the article has changed to a different state or thing (see MPEP 2106 page 2100-15). In this particular case, the [E]xaminer takes the position that no matter transformation exist[s]. The condition of physical transformation is shown when an article has undergone some sort of change in its physical property. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. In this particular case, the act of transcribing information into an empty book does not change the physical property of the book. An act of transcribing also refers to a type of human based action that has been considered to be ineligible type of transformation (see MPEP 2100.15). Ans. 4; see also Final Act. 7. Claim 1 is not directed to a method of creating a book or dictionary. The claim is directed to a method of creating Chinese-character-scripts. Apart from the template key-symbol dictionary, claim 1 does not link the Appeal 2014-006331 Application 13/623,667 8 Chinese-character scripts to a tangible item such as a book or dictionary. Thus, claim 1 is not tied to a particular machine or apparatus. Claim 1 also does not transform a particular article into a different state or thing. At the outset, although claim 1 is not directed to a method of creating a book or dictionary, we agree with the Examiner that “the act of transcribing information into an empty book does not change the physical property of the book.” Final Act. 7; see also Ans. 4. In this case, arranging Chinese-character scripts is not a “new and unforeseen invention” or an “emerging technolog[y]” that poses a difficulty in deciding whether the claim qualifies as a patentable “process.” Bilski, 130 S. Ct. at 3227–28. In other words, claim 1 does not “effect an improvement in any other technology or technical field.” See Alice Corp., 134 S. Ct. at 2359–60 (citation omitted); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (reiterating the Supreme Court’s approach in Alice Corp); Final Act. 7 (“A new or different function or use can be evidence that an article has been transformed.”); Ans. 4. Moreover, even accepting, arguendo, that transcribing Chinese-character-scripts in an empty book in some sense transforms the book to a different state, this is not the type of transformation that would transform the nature of claim 1 into a patent- eligible application. Cf. Mayo, 132 S. Ct. at 1303 (“Regardless, in stating that the ‘machine-or-transformation’ test is an ‘important and useful clue’ to patentability, we have neither said nor implied that the test trumps the ‘law of nature’ exclusion.”). Thus, the machine-or-transformation test provides further support for the conclusion that claim 1 is directed to non-statutory subject matter. Appeal 2014-006331 Application 13/623,667 9 Additionally, considering the steps of claim 1 “as an ordered combination,” adds nothing significant beyond the sum of their parts taken separately. See Alice Corp., 134 S. Ct. at 2359. Viewed as a whole, claim 1 simply recites the concept of creating Chinese-character-scripts. As discussed supra, the “placing,” “transcribing,” and “identifying” steps of claim 1 are merely steps, which could be performed mentally or by a human writing information, and, thus, are insufficient to supply the inventive concept needed to transform claim 1 into a patent-eligible application. See Final Act. 7 (“An act of transcribing also refers to a type of human based action that has been considered to be ineligible type of transformation.”); Ans. 4. In other words, the steps of claim 1 are “not ‘enough’ to transform an abstract idea into a patent-eligible invention.” See Alice Corp., 134 S. Ct. at 2360 (citation omitted). For all the foregoing reasons, the Examiner correctly determined that claim 1 is directed to non-statutory subject matter. We, thus, sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We further sustain the rejection of claims 2–20, which fall with claim 1. DECISION We AFFIRM the Examiner’s decision to reject claims 1–20 for non- statutory obviousness-type double patenting over claims 1–20 of Sanet. We AFFIRM the Examiner’s decision to reject claims 1–20 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). Appeal 2014-006331 Application 13/623,667 10 AFFIRMED Copy with citationCopy as parenthetical citation